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EP 2000 improves patentee position

The Netherlands is generally seen as an attractive jurisdiction for litigating patent disputes, particularly because of its specialised patent courts and the procedural system, which can provide for a rather quick and substantial assessment of infringement and validity disputes.

A defendant can, inter alia, defend its position vis-à-vis the patentee by arguing invalidity of the patent. For this purpose, he will generally have to institute a revocation action against the patent in The Netherlands. Such a revocation action can be instituted by writ of summons in a new action, or as a counterclaim in pending infringement proceedings on the merits.

For the patentee, it is obviously important to remain flexible during the revocation action. New prior art may pop up, i.e. prior art that has not previously been seen during prosecution, and Dutch court may also have a different opinion to the EPO’s as to the assessment of known prior art. The patent may come under serious threat, and in such event the patentee should have as a fall back position that if there would be reason to revoke, it should not be of the patent in its entirety, but only partially, ensuring a maintenance of the patent to the extent considered valid.

The Dutch Patent Act does provide a basis for a partial revocation. However, contrary to the position in many other contracting States to the European Patent Convention (EPC), in 1996 The Netherlands formulated additional criteria for the maintenance of patents in a modified form revocation proceedings; criteria that are not part of the traditional criteria for validity as set out in Article 138 EPC (novelty, inventive step, etcetera). A failure to meet these additional criteria would lead to revocation of the patent in its entirety.

These additional criteria were introduced by the Dutch Supreme Court in its decision of 9 February 1996 in the case Spiro v Flamco, and maintained by the same court in a subsequent decision of 16 February 2001 in the case Wiva v Van Egmond. Partial nullification and a modified maintenance of a patent was “only permitted if it is sufficiently clear to the average person skilled in the art who takes note of both the patent specification and the state of the art on the priority date where the boundaries of the protection are that are provided by the patent, if valid. For this, it is not only required that afterwards an amendment of the patent can be formulated, which draws these boundaries with sufficient clarity, but also that it is an amendment that was already sufficiently obvious to the average person skilled in the art beforehand to independently come to the conclusion, on the basis of the contents of the patent in conjunction with the state of the art on the priority date, that the patent should only have been granted with the restriction in that amendment and that it was therefore valid within the narrower boundaries to be derived from this’. The criteria have been derived on the one hand from the statutory requirements (Article 75(1)(ad) Dutch Patent Act) and on the other hand from the justified interests of third parties, also in connection with the retroactive effect of the revocation. The Spiro/Flamco doctrine has been applied since 1996 in a variety of cases, and has been the subject of criticism ever since.

With the entry into effect of EPC 2000 on 13 December 2007, this has however changed, at least as far as it concerns European patents. In any case for such patents, the so-called Spiro/Flamco doctrine no longer applies.

The first court to decide so was the Hague first instance patent court in its decision of 8 October 2008 in the case Boston Scientific v EGP. The court concluded that the Spiro/Flamco doctrine can no longer be maintained in the light of the changes to Article 138 under EPC 2000. This provision, which sets out under which limitative grounds European patents may be revoked, has direct effect in the contracting states of the EPC.

First of all, the court considered that new subsection 3 of Article 138 EPC determines that in case of a validity attack, the patentee has the right to limit the patent by amending the claim.

Furthermore, whilst subsection 1 of the old Article 138 EPC determined that “Subject to the provisions of Article 139, a European patent may only be revoked under the law of a Contracting State, with effect for its territory, on the following grounds [..]”, new subsection 1 no longer comprises this reference to national law: “Subject to Article 139 a European patent may be revoked with effect for a Contracting State only on the grounds that [..]”

With reference to the travaux préparatoires of EPC 2000, the Hague patent court held this amendment to be of material importance, providing a more drastic harmonisation of (national) revocation actions than under the old EPC. The court concluded that this harmonisation not only served to make partial revocation possible in each and every contracting state, but also to exclude that contracting states will formulate additional criteria to those already comprised in article 138 EPC. An extra pointer for this conclusion was found in the amendments of subsection 2 of Article 138 EPC. Whilst under the old EPC, subsection 2 of Article 138 provided "If the national law so allows, the limitation may be effected in the form of an amendment to the claims [..]", subsection 2 of Article 138 under EPC 2000 now provides that "the patent shall be limited by a correspondent amendment to the claims and revoked in part".

Since its decision of 8 October 2008, the Hague first instance patent court has in at least 3 subsequent decisions followed the same reasoning.

Recently, it was up to the Dutch Supreme Court to decide upon the fate of the Spiro/Flamco doctrine after the entry into force of EPC 2000. Although the case had to be assessed under the old EPC, the Dutch Supreme Court did add to its considerations, on basis of the reasons set out above, that with the entry into force of EPC 2000 the additional Dutch criteria for partial revocation and modified maintenance of European patents no longer apply. With that, in any case as far as it concerns European patents, the heavily criticised Spiro/Flamco doctrine is finally laid to rest.

Compare jurisdictions: Litigation: Enforcement of Foreign Judgments

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